OPPOSITION No B 3 056 097

Gaseosas Posada Tobon S.A., Calle 52, No. 47-42, Medellín, Colombia (opponent), represented by Hoffmann Eitle Patent- und Rechtsanwälte Partmbb, Arabellastr. 30, 81925 München, Germany (professional representative)

a g a i n s t

Zana Parr, Scherengrund 14, 63768 Hösbach, Germany (applicant), represented by Kanzlei Daniel Raimer, Ernst-Gnoß-Straße 22, 40219 Düsseldorf, Germany (professional representative).

On 28/05/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 056 097 is upheld for all the contested goods.

2. European Union trade mark application No 17 865 809 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 865 809 for the word mark ‘SPEED MONKEYS’. The opposition is based on European Union trade mark registration No 11 451 564 for the figurative mark . The opponent invoked Article 8(1)(a) and (b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

a) The goods

The goods on which the opposition is based are the following:

Class 32: Aerated and non-aerated water, aerated and non-aerated mineral water, aerated and non-aerated fruit juices, non-alcoholic aerated and non-aerated flavoured beverages, aerated and non-aerated fruit drinks.

The contested goods are the following:

Class 32: Energy drinks; non-alcoholic beverages; isotonic beverages; lemonades.

The contested energy drinks; isotonic beverages and lemonades are included at least in one of the following categories of the opponent: non-alcoholic aerated and non-aerated flavoured beverages. Therefore, they are identical.

The contested non-alcoholic beverages include, as a broader category the opponent’s non-alcoholic aerated and non-aerated flavoured beverages. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

b) Relevant public — degree of attention

In the present case, the goods found to be identical are directed at the public at large and at professional athletes, in the case of isotonic beverages. The degree of attention is considered to be average.

c) The signs

	SPEED MONKEYS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C‑514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

The common element ‘SPEED’ is not meaningful in certain territories, for example in those countries where English is not understood. Consequently, the Opposition Division finds it appropriate to focus the comparison of the signs on some of those territories, namely in the Spanish- and Bulgarian-speaking parts of the public.

The verbal elements of the signs have no meaning for the relevant public, and they are, therefore, distinctive.

As regards the earlier sign, some of the figurative elements may allude to splashing liquids. Bearing in mind that the relevant goods are water and non-alcoholic drinks, this element is considered weak. The rest of the figurative elements, the rectangular background, the circles and various lines, play merely a decorative role and consequently will have reduced impact as well.

The earlier mark has no element that could be considered clearly more dominant than other elements. However, when signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T‑312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the verbal element of the earlier mark has stronger impact than the rest of elements (figurative) accompanying it.

It should be mentioned as well, that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. It is, therefore, relevant to note that in the present case the coinciding element ‘SPEED’ is the only verbal element in the earlier mark and the first element read and pronounced in the contested sign.

Visually and aurally, the signs coincide in the word ‘SPEED’ and the sound of its letters. However, they differ in the figurative elements present only in the earlier mark as well as in the second verbal element ‘MONKEYS’ (and its sound) of the contested sign which has no counterpart in the earlier mark. These differences, however, are entirely in the elements and aspects of reduced impact for the reasons explained above.

Therefore, the signs are visually and aurally similar to an average degree.

Conceptually, neither of the signs has a meaning for the public in the relevant territory. Since a conceptual comparison is not possible, the conceptual aspect does not influence the assessment of the similarity of the signs.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal, despite the presence of some weak elements in the mark, as stated above in section c) of this decision.

e) Global assessment, other arguments and conclusion

According to the case-law of the Court of Justice, in determining the existence of likelihood of confusion, trade marks have to be compared by making an overall assessment of the visual, aural and conceptual similarities between the marks. The comparison ‘must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components’ (11/11/1997, C-51/95, Sabel, EU:C:1997:528, § 22.). Likelihood of confusion must be assessed globally, taking into account all the circumstances of the case.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

In the present case, the contested goods are identical to the opponent’s goods. They are directed at the public at large and professionals, whose degree of attention is considered average.

The signs are visually and aurally similar to an average degree. The only verbal element of the earlier mark is entirely included in the contested sign.

The differences are based on additional elements considered secondary, decorative or of reduced impact compared to the common distinctive verbal element ‘SPEED’.

The degree of distinctiveness of the earlier mark is normal.

Likelihood of confusion covers situations where the consumer directly confuses the trade marks themselves, or where the consumer makes a connection between the conflicting signs and assumes that the goods/services covered are from the same or economically linked undertakings. Indeed, it is highly conceivable that the relevant consumer will perceive the contested mark as a sub-brand, a variation of the earlier mark, configured in a different way according to the type of goods that it designates (23/10/2002, T-104/01, Fifties, EU:T:2002:262, § 49). Consumers could indeed be led to believe that the owner of the earlier mark has launched a new line of products, for example, sports and energy drinks.

Consequently, the Opposition Division is of the opinion that the contested sign can be perceived as another version of the earlier sign.

Considering all the above, there is a likelihood of confusion on the part of the Spanish- and Bulgarian-speaking part of the public. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 11 451 564. It follows that the contested trade mark must be rejected for all the contested goods.

Since the opposition is fully successful on the basis of the ground of Article 8(1)(b) EUTMR, there is no need to further examine the other ground of the opposition, namely Article 8(1)(a) EUTMR.

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

María del Carmen SUCH SÁNCHEZ

Tzvetelina IANTCHEVA

Sofia SACRISTAN MARTINEZ

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.